Ex Parte Sharmin et al

Board of Patent Appeals and Interferences

Sep 28, 2010

10447699 (B.P.A.I. Sep. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte SUMANA SHARMIN,
SRIDHAR SADASIVAN,
LORI SHAW-KLEIN, and
EDWIN J. VOLL
__________

Appeal 2009-014612
Application 10/447,699
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
finally rejecting claims 1, 4, 7-14, 17-20, and 22, all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal is directed to an image recording
element, such as an ink jet image recording element, comprising a support
and an ink-receiving layer wherein the ink-receiving layer comprises at least
one porous layer and at least one swellable layer. The image recording
element is said to dry quickly and provide photographic-quality images
having superior image quality and stability to the environment. Spec. 3:27-
30. Claim 1, reproduced below, is illustrative.
1. An image recording element comprising a support and an
ink-receiving layer wherein said ink-receiving layer comprises
at least one porous layer adjacent said support and at least one
swellable layer, comprising a hydrophilic polymer and mordant,
adjacent said porous layer and on the surface of said image
recording element, wherein said at least one porous layer has
pores of a median pore diameter of between 0.2 and 0.5 µm and
wherein said at least one porous layer comprises binder and
particles having a mean particle size of between 0.3 and 5 µm,
and said at least one swellable layer has a thickness of at least
2.1 and less than 5 µm and wherein said at least one swellable
layer is non-porous.

Appeal Brief dated September 17, 2008 (“App. Br.”), Claims Appendix.
The following Examiner’s rejections are before us on appeal:
(1) Claims 1, 4, 7-14, 19, 20, and 22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hoshino.2

2 US 6,472,053 B1 to Hoshino et al., issued October 29, 2002.
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(2) Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Hoshino and Shaw-Klein.3
(3) Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Hoshino and Lawrence.4
As to rejection (1), the Appellants argue the patentability of claims 1,
4, 7-14, 19, 20, and 22 as a group. The Appellants do not present separate
arguments for rejections (2) and (3). Br. 7. Therefore, for purposes of this
appeal, the patentability of the claims on appeal will be based on the
arguments set forth by the Appellants in support of the patentability of claim
1. 37 C.F.R. § 41.37(c)(1)(vii) (2009).
B. ISSUES
Did the Examiner reversibly err in concluding that the “swellable”
layer recited in claim 1 and Hoshino’s second ink-receiving layer are
patentably indistinct?
Did the Examiner reversibly err in concluding that the claimed
swellable layer, having a thickness of at least 2.1 and less than 5 µm, would
have been obvious to one of ordinary skill in the art in view of the teachings
of Hoshino?
Did the Examiner reversibly err in concluding that the claimed porous
layer, having pores of a median pore diameter between 0.2 and 0.5 µm,
would have been obvious to one of ordinary skill in the art in view of the
teachings of Hoshino?
We answer these questions in the negative.

3 US 6,303,212 B1 to Shaw-Klein et al., issued October 16, 2001.
4 US 6,347,867 B1 to Lawrence et al., issued February 19, 2002.
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C. FINDINGS OF FACT
The Appellants disclose that “ink-receiving layers generally are either
of two types: swellable (non-porous) or porous.” Spec. 2:4-6.
According to the Appellants:
U.S. Patent 6,472,053 B1 [(Hoshino)] relates to an ink jet
recording sheet having a support, a first porous ink-receiving
layer coated on the support, and a second swellable ink-
receiving layer coated on the first ink-receiving layer. The
invention is disadvantaged because the particles that can be
used in the porous layer are limited to primary particles having
an average particle size between 10 to 500 nm.[5]

Spec. 2:16-21 (emphasis added).
The ink jet recording material disclosed in Hoshino is said to exhibit
high ink absorbency, vivid ink coloration, excellent keeping quality, and
high surface gloss. Hoshino 1:5-12.
Hoshino discloses that the second ink-receiving layer comprises a
resin capable of forming a glossy layer. This layer is said to be “porous to
an extent that it does not entirely block up the pores in the surface part of the
first ink-receiving layer.” Hoshino 4:41-53.
Hoshino discloses that the resin used for the second ink-receiving
layer may be any material capable of forming a layer with high surface gloss
and ink absorbency (permeability). Suitable examples are said to include
polyvinyl alcohol, polyvinyl pyrrolidone, and water-soluble cellulose.
Hoshino 8:21-33. Some of the same resins disclosed in Hoshino are said to
be suitable for use in the Appellants’ swellable layer. Spec. 7:18-23.

5 There is no dispute in this appeal that the particle size range disclosed in
Hoshino overlaps the claimed range.
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Hoshino discloses that the second ink-receiving layer has a coverage
of from 0.1 to 2.0 g/m2. Hoshino 7:66-8:4.
A coverage of less than 0.1 g/m2 is said to adversely affect surface
gloss, and a coverage of greater than 2.0 g/m2 is said to adversely affect ink
absorption. Hoshino 8:5-20.
Hoshino discloses that the radii of pores formed in the first ink-
receiving layer are within the range of 1 to 500 nm and the average pore
radius is 100 nm or below. Hoshino 6:9-12.
D. ANALYSIS
The Appellants argue that the second ink-receiving layer disclosed in
Hoshino is porous rather than nonporous as recited in claim 1. Br. 2-3. The
Appellants rely on Handbook of Imaging Materials 611-15 (Arthur S.
Diamond & David S. Weiss eds., Marcel Dekker, Inc., 2002), to establish
that it is well-known that swellable layers are nonporous. Br. 4.
According to the Handbook, there are two types of ink receiving
layers: porous and nonporous. Handbook at 611, 613; see also Spec. 2:4-6.
Porous ink receiving layers are said to comprise polymeric binders and
particles, such as silica and alumina. Handbook at 611. Nonporous ink
receiving layers are said to comprise polymers that can absorb the ink
solvents.6 Effective synthetic hydrophilic polymers are said to include PVA
and PVP. Handbook at 613.
Hoshino does not disclose that the second layer contains particles.
The Examiner finds that the only material required in Hoshino’s second

6 According to the Handbook, nonporous receivers absorb ink by diffusion
of the ink solvents into the polymer matrix, resulting in a rapid swelling of
the ink receiving layer in the areas where ink is deposited. Handbook at
615.
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layer is resin, including some of the same resins disclosed by the Appellants
as suitable for use in the claimed swellable layer. These resins include
polyvinyl alcohol, polyvinyl pyrrolidone, and water-soluble cellulose.
Hoshino 8:28-32; Spec. 7:18-23. Thus, the Examiner contends that the
swellable layer recited in claim 1 is not patentably distinct from Hoshino’s
second layer. Ans. 5, 6.7
The Appellants argue that swellable materials do not include
hydrophobic materials or crosslinked hydrophilic materials. However, the
Appellants argue that many of the materials disclosed in Hoshino are
hydrophobic, others are capable of crosslinking, and none of the materials
are described as “swellable.” Br. 3. In particular, the Appellants argue that
“Vylonal binder” used in Hoshino Examples 1 and 2 is hydrophobic. Br. 4.
This argument is not persuasive of reversible error. First, the
Appellants do not direct us to any evidence establishing that the resin
materials disclosed in Hoshino are hydrophobic. The Appellants’
unsupported allegation that the “Vylonal binder” used in Examples 1 and 2
has “[e]xcellent water-resisting property” does not suffice. See Br. 4.
Moreover, the Appellants do not direct us to any portion of Hoshino
disclosing that the resins in the second layer are crosslinked. Finally, to the
extent that Hoshino does not expressly disclose that the resins in the second
layer are “swellable,” the evidence of record establishes that at least some of
the resins used in Hoshino’s second layer are hydrophilic and known to be
used in a “swellable” layer. See Handbook at 613.
The Appellants also argue that Hoshino does not regard swelling as “a
favorable thing for his invention.” Br. 3-4. For support, the Appellants

7 Examiner’s Answer dated May 22, 2009.
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direct our attention to column 2, lines 18 and 54 and column 3, line 1 of
Hoshino. Br. 3-4.
The Appellants do not discuss, in any detail, why these portions of
Hoshino teach away from a swellable second layer. Suffice it to say that the
portions of Hoshino referred to by the Appellants do not indicate that
Hoshino’s second layer is not “swellable” and do not discourage the use of a
swellable layer in Hoshino’s inventive image recording element.
In sum, the preponderance of the evidence establishes that the
swellable layer recited in claim 1 and Hoshino’s second ink-receiving layer
are patentably indistinct.
As for the thickness of the swellable layer, Hoshino discloses that the
coverage provided by the second layer affects the glossiness and absorbency
of the image recording element. Hoshino 7:66-8:4. Since the Appellants
and Hoshino use the same resins to produce a layer having the same
properties, i.e., high surface gloss and high ink absorbency, the Examiner
concluded that the claimed thickness would have been obvious to one of
ordinary skill in the art in view of the teachings of Hoshino. Ans. 4.
In response, the Appellants argue that the results reported in Table 2
show that a thickness within the claimed range results in a “distinct
improvement” in the density for the black and magenta colorants. Br. 7.
The results reported in Table 2 (Spec. 20) have been rearranged based
on increasing thickness:
Example Thickness Magenta Black
Example 8 0.86µm 1.4 1.7
Example 9 1.75µm 1.6 1.9
Example 10 2.1µm 1.7 2.0
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Example 11 2.8µm 1.7 2.0
Example 12 3.5µm 1.8 2.0
Example 13 4.5µm 1.8 2.0
We recognize that the densities of the black and magenta colorants
increase as the thickness of the swellable layer increases. However, the
Appellants have failed to show that this result would have been
“unexpected.” See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (in
order for a showing of “unexpected results” to be probative evidence of non-
obviousness, the applicant must establish that the difference between the
results obtained through the claimed invention and those of the prior art
would not have been expected by one skilled in the art at the time of
invention). For this reason, the results reported in Table 2 are not probative
of “unexpected results.”
As for the pore sizes recited in claim 1, the Examiner finds that the
claimed range and the range disclosed in Hoshino are patentably indistinct,
i.e., they either overlap or are so close that they would be expected to exhibit
the same properties. Ans. 3-4.
In response, the Appellants direct us to Examples 2-4 and 7 in Table 1
of the Specification and argue that the image recording elements in these
examples have “better” coalescence and dry time than image recording
elements having a pore diameter less than 0.2 µm (i.e., outside the claimed
range). Br. 6.
The Examiner correctly finds that Table 1 (Spec. 19-20) shows that
image recording elements having a median pore diameter outside the
claimed range (i.e., Examples 1, 5, and 6) exhibit the same or substantially
the same coalescence and dry time as image recording elements having a
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median pore diameter within the claimed range (i.e., Examples 2-4 and 7).
Ans. 7. We recognize that the comparative examples show a reduced
coalescence and dry time. However, the comparative examples do not
represent the closest prior art (i.e., Hoshino). See In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984) (an applicant relying on comparative tests to rebut
a prima facie case of obviousness must compare the claimed invention to the
closest prior art). Finally, the Examiner notes that it is not possible to
determine whether the results reported in Table 1 are due to pore size,
bimodal pore distribution, or a combination of the two. Ans. 7; see also In
re Dunn, 349 F.2d 433, 439 (CCPA 1965) (cause and effect sought to be
proven is lost in the welter of unfixed variables). For these reasons, the
Appellants’ evidence is not probative of non-obviousness.
In view of the foregoing, the § 103(a) rejections will be affirmed.
E. DECISION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

kmm
PAUL A. LEIPOLD
PATENT LEGAL STAFF
EASTMAN KODAK COMPANY
343 STATE STREET
ROCHESTER, NY 14650-2201